India: BDA Fails For Want Of Misrepresentation

Last Updated: 14 October 2008

In a suit involving two marks, used for brands of whisky, an interim injunction was filed for before the Delhi High Court. The Marks involved included "Officer's Choice" held by BDA Pvt. Ltd. and "Original Choice". The order of the Delhi High Court disposed off interim applications applied for in two suits involved BDA Pvt. Ltd. v. Paul P. John and Anr and BDA Pvt. Ltd. v. John Distilleries and Anr., the former dealing with trademark infringement and passing off and the latter dealing with passing off action in addition to infringement of a copyright.

At the time when the suit was instituted, BDA not been granted a certificate of registration in respect of the mark "OFFICER'S CHOICE" and, therefore, that suit was based purely on the plea of passing off. The registration, when was granted, carried a disclaimer that BDA would not have any exclusive right to the use of the word "CHOICE". BDA averred that the mark "ORIGINAL CHOICE" is deceptively similar to their registered mark "OFFICER'S CHOICE". The defendants had also applied for registration of their trademark "ORIGINAL CHOICE" which acquired registration in the year 2007. Therefore, moving an application under Order 6 Rule 17 CPC seeking amendment of the plaint, an amended replication was filed and they challenged the validity of "ORIGINAL CHOICE".

A prayer under Section 124 of the Trade Marks Act was rendered for the suit to be stayed pending final disposal of proceedings before the Intellectual Property Appellate Board. Further, in view of the Section, the parties agreed that the stay of the suit for the infringement of a trademark under Section 124 did not preclude the Court from making any interlocutory order during the period of the stay of the suit.

Taking notice of a previous order, whereby the two suits were directed to be consolidated and it was agreed by the parties that evidence would be recorded. The issues were also framed therein. In pursuance to the same, Paul John and the others filed an filed an affidavit setting out the sales in different States. They also averred that where such distilleries are located, the defendants must have some sale, but BDA disputed the same. Taking note of certain letters on behalf of BDA ,the Court looked into the details of the interim arrangement and concluded that it was apparent that insofar as the question of infringement, that would be dependent on the decision of the IPAB. They stated that if "ORIGINAL CHOICE" would be held valid, BDA would not be entitled for any relief inasmuch as the defendants would have a complete defence. . On the other hand, if the registration of the defendants? trademark ?ORIGINAL CHOICE? is held to be invalid by the IPAB, then the plaintiff would be entitled to seek the remedies for infringement of its registered mark "OFFICER'S CHOICE".

The Court noted that the deciding question before it was that of passing off. The Court noticed that a controversy as to whether Cruickshank and Co. had made an assignment for all times to come or whether it was merely a temporary measure existed and that a suit filed by Cruickshank in the regard was pending. However, the Court noted that prima facie it appeared that the plaintiff had been using the mark "ORIGINAL CHOICE" since 1991 in respect of the whisky manufactured and sold by it.

BDA contended that the getup and design of the impugned label as well as the bottle was deceptively similar to theirs. They also stated that Paul John and co-partied had admitted the marks to be deceptively similar to theirs vide the opposition filed to the application for registration by BDA.

The Court stating that because only a prima facie view has to be taken a detailed examination of the evidence adduced ought to be left for the final hearing of the suit. The Court concluded that BDA' plea was based on its claim of being a prior user, and similarity in trade dress and get-up, inasmuch as the adoption of "ORIGINAL CHOICE" by Paul John and others was dishonest inasmuch as throughout the evidence on record, no plausible explanation has been given as to why the said mark was chosen.

Responding to BDA's contentions, Paul John and others averred that BDA did not disclose the date on which it became aware of the existence of "ORIGINAL CHOICE" and that the same disentitled them to any injunction. They substantiated this by stating that they had been submitting their labels for excise approval since 1996 and that the same was within the knowledge of BDA, in spite of which no action had been taken until till 2002, in effect a substantial delay on BDA' part in approaching this Court.

Looking at the various averments made and evidence adduced, the Court concluded that there existed no question of the grant of any injunction based on passing off action and that delay and acquiescence were major considerations in any action for passing off. The Court stated that it was, therefore, incumbent upon the plaintiff to have disclosed as to when it became aware of the trademark "ORIGINAL CHOICE"

The Court taking a prima facie view in the matter held that the impugned label and bottle could not be passed off as that of BDA's, thus, the very first element of misrepresentation, which is essential for an action of passing off, is, prima facie, being absent. Stating so, the Court declined the grant of interim injunction and the interim operation was stated to cease to operate. However the Court directed that Paul John and co-parties would maintain proper accounts of their sales of "ORIGINAL CHOICE" whisky and make the same available to the Court as and when directed.

© Lex Orbis 2008

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